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The “Betty Boop” word mark, as used on merchandise such as T-shirts and
posters in conjunction with an image of the cartoon character, is both
aesthetically functional and a protected fair use, the U.S. District Court for
the Central District of California held Nov. 14 (Fleischer Studios Inc. v. A.V.E.L.A. Inc.,
C.D. Cal., No. 2:06-cv-06229-ABC-MAN, 11/14/12).

The court's opinion followed an unusual remand by the U.S. Court of Appeals
for the Ninth Circuit. The appeals court initially upheld the district court's
finding of noninfringement and in fact recognized that the mark was
aesthetically functional--an argument not raised by either party below. That
portion of the Ninth Circuit's opinion was, however, subject to substantial
criticism, and the court later issued an amended opinion ignoring the aesthetic
functionality doctrine. The second opinion remanded the trademark infringement
claim for further findings.

The court here acknowledged that the Ninth Circuit's operative opinion
contained no aesthetic functionality analysis. However, it determined that “the
reasoning set forth in [the Ninth Circuit's initial opinion] is nevertheless
sound and applicable.” It thus found that the defendants' use of the Betty Boop
mark was for artistic, not source identification, purposes. Accordingly, the
mark was not used as a trademark, and the infringement claim could not succeed,
the court held.

Mark Changed Hands Frequently After Creation.

In the 1930s, animator Max Fleischer created the cartoon character Betty
Boop, which appeared in a series of films and which was licensed for use on
merchandise. In 1941, Fleischer sold his rights in the character and the
cartoons to Paramount Studios Inc. In 1955, Paramount transferred its rights in
the films to UM&M TV Corp., and in 1958, UM&M transferred the rights to
National Telefilm Associates Inc. In 1986, National Telefilm acquired the name
and logo of the then-defunct Republic Pictures and transferred its interest to
the new Republic Pictures.

After Max Fleischer's death in 1972, his family re-formed Fleischer Studios
Inc. as a new entity, and in 1997, Fleischer Studios contracted with Republic
Pictures to acquire the rights in the Betty Boop character and films. Since the
1970s, the Betty Boop character has seen a surge of popularity and it appears in
a variety of forms on a wide range of licensed goods.

Fleischer Studios filed an action for copyright and trademark infringement
against several entities--A.V.E.L.A. Inc. d/b/a Art and Vintage Entertainment
Licensing Agency, Art-Nostalgia.com Inc., X One X Movie Archive Inc., and Leo
Valencia--that also licensed uses of the Betty Boop character. In particular,
Art and Vintage claimed rights in Betty Boop images that appeared on vintage
posters which it had restored.

Art and Vintage moved for summary judgment, arguing that there was
insufficient evidence to establish the validity of the transfers of copyright
ownership to UM&M, National Telefilm, and Republic Pictures. Judge
Florence-Marie Cooper of the U.S. District Court for the Central District of
California agreed, ruling that Fleischer Studios held no valid copyright
interest in Betty Boop.

The district court also found that Fleischer Studios had presented
insufficient evidence of a valid federal trademark registration or common law
trademark rights. The court thus granted Art and Vintage's motion, dismissing
Fleischer's copyright and trademark claims.

Betty Boop “w[as] a prominent feature
of each item so as to be visible to others when worn … ” … A.V.E.L.A. “never
designated the merchandise as 'official' [Fleischer] merchandise or otherwise
affirmatively indicated sponsorship.” … Fleischer “did not show a single
instance in which a customer was misled about the origin, sponsorship, or
endorsement of [Art and Vintage's products], nor that it received any complaints
about [Art and Vintage's] wares.”

The appearance of the Betty Boop character on the goods was aesthetically
functional, the court said, and thus was not infringing of any trademark rights
that might be asserted

Critics, many believing the aesthetic functionality doctrine to be long dead,
strongly opposed the doctrine's sua sponte revival by the Ninth Circuit.

It was “the worst decision to be handed down in the last 12 months,”
according to a participant in a panel discussion presented by the American Bar
Association in early 2012 (68 PTD, 4/10/12). Another panelist said that the
decision “would be the death knell of trademark law.”

The ABA panelists' candid remarks came a few months after Fleischer I
had been withdrawn by the Ninth Circuit when it issued Fleischer II. 654
F3d 958, 97 USPQ2d 183 (9th Cir. 2011).

Fleischer IIDrops Aesthetic Functionality Analysis.

The Ninth Circuit's amended opinion was distinguishable from its earlier
opinion only in its analysis of the trademark infringement claims.

Fleischer II scrubbed all mention of the aesthetic functionality
doctrine, instead finding a number of problems with the district court's
treatment of Fleischer's trademark claims. Specifically, the appeals court took
issue with the district court's disposition on summary judgment of Fleischer's
infringement claim going to its alleged ownership of a trademark on the words
“Betty Boop.”

First, the appeals court addressed the district court's conclusion that the
“fractured history” of the IP rights in Betty Boop precluded Fleischer from
demonstrating secondary meaning in the mark.

“The fractured history theory … is one that neither this nor any circuit has
yet adopted,” the Ninth Circuit said. Moreover, even if the theory could apply
to prevent a showing of secondary meaning, the facts in this case did not
support application of the theory below, the court said. It thus found the
district court's use of the doctrine to be in error.

The Ninth Circuit also found inadequate the lower court's failure to explain
its decisions going to Vintage's alleged use of the mark in commerce, and to
likelihood of confusion. The district court had determined both that Vintage's
use did not amount to use in commerce, and that the use did not raise a
likelihood of customer confusion. Given the lack of explanation on either issue,
“we are unable to ascertain a legal basis for the district court's reasoning on
the current record,” Fleischer II held. It thus remanded “for further
proceedings on Fleischer's trademark infringement claims regarding the Betty
Boop word mark.”

District Court Revives Aesthetic Functionality Analysis.

The district court began its trademark infringement analysis by pointing out
that in its 2009 decision it had determined that because Vintage had not used
the mark as a trademark it could not be liable for trademark infringement.

“While that order did not provide much reasoning for this conclusion, the
Ninth Circuit in Fleischer I did. Although the Ninth Circuit withdrew
Fleischer I and remanded the case, the reasoning set forth in
Fleischer Iis nevertheless sound and applicable,” Judge Audrey B. Collins
said.

“Because trademark law is concerned only with identification of the maker of
the product so as to avoid confusing consumers, it 'does not prevent a person
from copying so-called 'functional' features of a product which constitute the
actual benefit that the consumer wishes to purchase, as distinguished from an
assurance that a particular entity made, sponsored, or endorsed a product,' ”
the court said, quoting Job's Daughter.

The court noted that Au-Tomative Gold established a two-part test to
be used to determine if a mark is functional. The first thing a court must do is
determine if “the alleged 'significant non-trademark function' of the mark '[is]
essential to the use or purpose of the article [or] affects [its] cost or
quality,' ” the court said, quoting Au-Tomative Gold.

“Although the Ninth Circuit withdrew Fleischer I and
remanded the case, the reasoning set forth in Fleischer Iis nevertheless
sound and applicable.”

Judge Audrey B. Collins

If the answer to the first query is yes then the mark is functional and no
infringement liability can be imposed, the court said. Again quoting
Au-Tomative Gold it added, “However, where the claim is one for aesthetic
functionality, one additional question applies: the court should determine if
'protection of the feature as a trademark would impose a significant
non-reputation-related competitive disadvantage.' ” Where the feature provides
the mark's owner with a competitive advantage, the mark is aesthetically
functional and not protectable, the court said.

Turning to the facts at hand, the court first concluded--once again--that
Vintage did not use the Betty Boop mark as a trademark. “Considering that
Defendants use the words Betty Boop as an artistic design element and identify
themselves as the source of the goods, their use of the words Betty Boop simply
cannot be viewed as source-identifying,” the court said.

Moreover, Vintage's use is also for aesthetically functional purposes, the
court said. It concluded:

Because, as noted above, Defendants'
use of the mark is a decorative feature of their merchandise and is not
source-identifying, “protection of the feature as a trademark would impose a
significant non-reputation-related competitive disadvantage” on Defendants. Were
Defendants to market their goods bearing the image of Betty Boop or Betty Boop
movie posters without the words Betty Boop to identify the character, that would
make their products less marketable than the same product that included the
BETTY BOOP name. This is because the words Betty Boop serve to name the famous
character depicted on those goods and are part and parcel of the movie posters
printed on Defendants' merchandise.

Fair Use Also Protects Defendants.

Alternatively, the court said that Vintage's use of the Betty Boop mark was
also protected under the fair use doctrine.

In trademark infringement cases, an affirmative fair use defense can be
raised “when a mark is used in its primary descriptive sense rather than its
secondary trademark sense,” the court said.

In this case, the word mark is used in connection with the Betty Boop image,
and thus it is used for descriptive purposes, the court said. Indeed, “It is
extremely unlikely that a prospective consumer would understand those words as
identifying the source of the goods rather than merely naming the character,”
the court said.

The court noted that, in fact, there was no other term available to Vintage
that would adequately describe the Betty Boop image better than could the
asserted mark. Noting that the proceedings have already established Vintage's
right to use the Betty Boop image, the court determined that Vintage “must
also … be able to identify this character by name.”

No Likelihood of Confusion.

Finally, the court addressed Fleischer's argument that Vintage's use of the
mark was likely to confuse customers as to the source of the goods.

The court began by noting that in a likelihood of confusion analysis a court
would “ordinarily” apply the eight factor test set forth in AMF Inc. v.
Sleekcraft Boats, 599 F.2d 341,204 USPQ 808 (9th Cir. 1979). However,
because Vintage does not in fact use the term for trademark purposes, “the Court
finds it unnecessary to reach the Sleekcraftfactors here.”

The court similarly rejected Fleischer's doctrine of legal equivalents
argument. That argument was premised on Fleischer's contention that the word
mark was legally equivalent to a pictorial depiction of Betty Boop. Because the
word mark and the picture mark are legal equivalents, Fleischer argued that a
likelihood of confusion analysis can take into account uses of both the picture
mark and the word mark.

The court agreed that the two marks “could be considered legal
equivalents,” but it failed to see how this helped Fleischer. Fleischer's
confusion analysis is not thwarted by the inability to compare the word mark to
the picture mark, the court said. Rather, it is the fact that Vintage did not
use the word mark as a trademark that dooms Fleischer's confusion argument, it
said.

The court accordingly granted Vintage summary judgment.

Vintage was represented by James E. Doroshow of Fox Rothschild, Los Angeles.
Fleischer was represented by Robert P. LoBue of Patterson Belknap Webb &
Tyler, New York.

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